A recent decision by the Trademark Trial and Appeal Board of the USPTO highlights how registering logos that are stylised versions of your word marks can help protect your brand.

In The Coca-Cola Company v Robert Troy Hoff, the Applicant’s logo, which used the same font and was stylised in a similar way to Coca Cola’s logo (the “Coca-Cola Script Mark”), was successfully opposed on the basis of dilution.

Key takeaways from this are:

• If you only register a word mark and not the mark in its stylised form, it will be difficult to challenge other trademarks stylised to appear visually similar;
• Logos using the same font can be considered similar even where completely different words are used; and
• Even if a trademark is registered for different goods and services to a very famous trademark, the distinctiveness of the famous trademark means that the marks might still be considered similar.

Facts

The Applicant sought to register the stylised mark containing the words “Conceal-Carry” shown below for “Hats; Hoodies; Jackets; Jerseys; Sweaters; T-shirts; Graphic T-shirts; Short-sleeved or Long-sleeved t-shirts; Sports jerseys”.

The Coca-Cola Company opposed registration on the grounds that the Applicant’s Mark was likely to be confused with, and was likely to dilute by blurring, the Coca-Cola Script Mark, also shown below.

Decision

Dilution by blurring ­is a ground of opposition in the US established where a consumer would associate a mark or trade name with a similar famous mark in a way that would impair the famous mark’s distinctiveness.

The Board was satisfied that the Coca-Cola Script Mark was a distinctive mark that became extremely famous decades ago and remained so today after evidence of:

• Historical use of the Coca-Cola Script Mark for over one hundred and thirty years in the US;
• Historical advertising and promotional materials bearing the Coca-Cola Script Mark in almost all available media and channels of trade, including high profile events such as the Olympics and World Cup events;
• High sales of products bearing the Coca-Cola Script Mark, with sales exceeding $1.8b in 2015-19 alone;
• Significant amounts of expenditure on historical advertising and promotion of goods bearing the Coca-Cola Script Mark, with $3b spent between 2015-19 alone; and
• Recognition by third parties and courts that the Coca-Cola Script Mark is an iconic mark, including unsolicited media articles discussing its distinctiveness and recognisability.

The Board also found that a substantial percentage of consumers who saw the Applicant’s Mark would be immediately reminded of the Coca-Cola Script Mark and associate the Applicant’s Mark with Coca Cola because:

• There was an obvious and striking visual similarity between the two Marks:

1. Both contained two-syllable words beginning with the letter “C” and joined by a hyphen;
2. The words in the Applicant’s Mark were positioned relative to each other in almost the same way as those in the Coca-Cola Script Mark;
3. Even though the words in the two marks were different, the words in the Applicant’s Mark were disclaimed as they were non-source identifying.

• The evidence established that the Coca-Cola Script Mark had acquired a high degree of distinctiveness and recognition;
• There was no evidence of any third-party use of any mark similar to the Coca-Cola Script Mark;
• Although the Applicant argued that the mark was created to promote awareness of US gun control and the Second Amendment, it was inferred that he intended to create an association with and trade on the goodwill and fame of the Coca-Cola Script Mark:

1. Even though there were countless other ways the Applicant could have stylised the word mark “Conceal Carry”, he chose to display them in a script that immediately conjured up the Coca-Cola Script Mark, especially when worn;
2. The Applicant deliberately used the words “Conceal Carry” rather than “Concealed Carry” which was the relevant term of art in gun legislation, thereby giving his Mark the same syntactic structure as “Coca-Cola”;
3. The Applicant’s Mark contained the block letter term “REGISTERED HANDGUN”, which mimicked Coca Cola’s historical use of the terms “Trade-Mark Registered” and “Reg. U.S. Pat. Off” below the Coca-Cola Script Mark;
4. The Applicant chose to display his Mark in white against a red background on garments he offered for sale displaying the Mark, similar to how Coca-Cola had consistently used the Coca-Cola Script Mark in red and white for many decades; and
5. There was no other credible explanation for the above choices other than the Applicant seeking to have his mark stand out because of its similarity to the Coca-Cola Script Mark.

The Board considered that the Applicant’s Mark would impair the distinctiveness of the Coca-Cola Script Mark because a consumer associating the Applicant’s Mark with Coca-Cola would consequently associate Coca-Cola with the Applicant’s position on gun control, even though Coca-Cola had not taken a stance on this issue. Furthermore, the association between the Applicant’s Mark and the Coca-Cola Script Mark would compromise Coca-Cola’s ability to exercise exclusive control over the goodwill in the Coca-Cola Script Mark.

In light of the above, the Board found that the Applicant’s use and registration of his Mark was likely to dilute by blurring the distinctiveness of the famous Coca-Cola Script Mark.

Because the Court sustained the opposition on the likelihood of dilution, it did not consider the likelihood of confusion ground.

Conclusion

The visual similarity between the script in the Applicant’s Mark and the Coca-Cola Script Mark was the key driver of Coca-Cola’s opposition. Therefore, if Coca-Cola had never trademarked its stylised Coca-Cola Script Mark, it may have not been able to oppose the registration of the Applicant’s Mark. This emphasises how registering the stylised version of your word mark as well as the word mark itself is important to protecting your brand.

If you wish to discuss your options to register your trademark in Australia, please do not hesitate to contact us.

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